Written description and enablement are among the most common reasons for patent application rejections — not only during the prosecution phase, but also during post-grant review. While they are often discussed in the same breath as if they are a single requirement, written description and enablement are in fact different considerations under U.S. law with distinct requirements.
Rejections often cause a mass exodus of potential licensees and business partners, or in the case of start-ups a failed application or post-grant challenge can be a death knell for the fledgling company. Adding to the complexity is the impact of differing standards for meeting written description and enablement requirements in overseas patent venues, which should also be factored into your drafting strategies.
We’ve teamed up with leading experts from the law firm Innovators Legal — with decades of experience counseling university clients — to bring you this eye-opening distance learning program that will discuss how each requirement under U.S. law is different, and what factors and strategies you must consider to ensure the strongest possible applications in terms of these Section 112a requirements.
This 90-minute session will also contrast the written description and enablement requirements with major foreign jurisdictions to highlight the relevant considerations that impact your U.S. application drafting.
Enroll now for:
Here’s a brief look at the program agenda:
- An overview of the legal standards for written description and enablement under U.S. patent practice, including considerations for both provisional and non-provisional applications
- Strategies for meeting the requirements in your applications to achieve higher approval rates for:
- The electrical and computer arts
- Chemical and pharmaceutical inventions; and
- Biotechnology inventions, particularly antibody claims
- A comparison of the U.S. standards to counterpart requirements in Europe and China, with special emphasis on differences that impact U.S. patent drafting strategies
- Real-life examples of written description and enablement-based rejections and what could have been done differently for a better outcome
- Review of relevant case law
Meet your session leaders:
John S. Sears, JD, PhD, CLP
Principal and Founder
Innovators Legal
John Sears founded Innovators Legal on a vision for rethinking the attorney-client relationship: one in which legal counsel integrates fully with the client team to mimic in-house representation. Driven by the belief that innovative clients should be represented by innovative counsel, John and his team offer their clients highly customizable services and cutting-edge tools to support technology development at every stage.
As a patent practitioner, John has drafted hundreds of patent applications covering biotechnology, chemistry, pharmaceutical, polymer science, materials science, nanotechnology, medical device, electronic device, and computer science innovations. His diverse background also includes experience running in-house intellectual property operations and diligence efforts for venture capital and private equity groups investing in technology companies; managing research programs; serving as faculty at Wake Forest University School of Law and Georgia Tech; and serving as a founding partner for The Startup Runway, a foundation that connects investors with underrepresented founders.
John works with many university clients and understands the complex needs and demands of university technology transfer and licensing. He is active in the Association of University Technology Managers (AUTM) and frequently presents to university technology-transfer groups and at regional and national AUTM meetings.
Richard T. “Rick” Timmer, PhD
Senior Patent Agent
Innovators Legal
Rick Timmer is a chemist, entrepreneur, educator, and inventor. He is experienced in patent portfolio management, diligence efforts, deal sourcing, and licensing negotiations, both from an in-house perspective as well as from the perspective of a legal practitioner advising clients from within a law firm environment. He has headed research programs in both academia and industry, taught undergraduate and graduate courses at leading research universities, and led investment rounds for early-stage biopharma companies. His clients have included prominent universities and research hospitals as well as early-stage and multi-national companies.
Rick works with many university clients and understands the complex needs and demands of university technology transfer and licensing. He is active in the Association of University Technology Managers (AUTM) and frequently presents to university technology-transfer groups and at regional and national AUTM meetings.
Girish B. Ratanpal, MSEE, JD, PhD
Senior Associate
Innovators Legal
Girish Ratanpal has prepared and prosecuted patent applications in the fields of computer networking, optical networks, Fiber-Channel networks and switches, electronic design automation (EDA), hybrid power supplies, vehicle battery systems, display devices, micro-electro-mechanical (MEMS) devices, optical devices, communication, deep learning, signal processing, analog and digital circuits, medical devices, and consumer electronics, including but not limited to storage area networks, audio and video conferencing systems, and implantable cochlear and spinal stimulators. In addition to his JD from Suffolk University Law School, he holds a PhD in electrical engineering from the University of Virginia. Girish has engaged with several university clients in building strong patent portfolios.
